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October 10, 1995

MULBERRY THAI SILKS, INC., Plaintiff, against K & K NECKWEAR, INC., Defendant.

The opinion of the court was delivered by: KAPLAN

 LEWIS A. KAPLAN, District Judge.

 Plaintiff moves, pursuant to Rule 59(e), for reconsideration of this Court's decision dismissing plaintiff's Lanham Act claim after trial on the ground that the trade dress at issue was not inherently distinctive and had not acquired secondary meaning. The motion for reconsideration is granted and, on reconsideration, the Court adheres to its original disposition.

 Plaintiff's initial argument is that the Court applied the wrong standard in determining whether plaintiff's neckties were inherently distinctive. The Court, as plaintiff contends, first noted that the Second Circuit had not yet considered the applicability of the standard articulated in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), to the determination of inherent distinctiveness in product design or configuration trade dress cases. According to plaintiff, the Court then held that "the appropriate analysis for this case is that applied by the Third Circuit in Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431 (3d Cir. 1994)." The Court then supposedly applied Duraco and held that plaintiff's trade dress was not inherently distinctive. Plaintiff contends that this was error because the Court overlooked the Second Circuit's recent decision in Jeffrey Milstein Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27 (2d Cir. 1995), applying the Abercrombie test in a product configuration trade dress case.

 Plaintiff is correct in noting that the Court did not discuss Jeffrey Milstein -- which plaintiff failed to bring to the Court's attention -- in connection with this point when it decided this case. The balance of its argument misstates this Court's analysis.

 As this Court's opinion made perfectly plain, the Court recognized the existence of both the Abercrombie and Duraco approaches to the determination of inherent distinctiveness. Contrary to plaintiff's assertion, the Court explicitly avoided choosing between the two:

"This Court need not choose between Abercrombie and Duraco in this case. Any appropriate test of the circumstances in which design may be a subject of Lanham Act protection without proof of secondary meaning -- in other words, any test of when a design will be regarded as inherently distinctive -- must take account of the essential purpose of the Lanham Act, which is to protect consumers against the risk of confusion as to source, sponsorship or affiliation. [citation omitted] In consequence, and consistent with Two Pesos International, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992)), a sine qua non of any test of inherent distinctiveness must be a requirement that the design be of such a character 'that one can assume without proof that it automatically will be perceived by customers' as an identifier of the source of the product . . . " Mulberry Thai Silks, Inc. v. K & K Neckwear, Inc., 1995 U.S. Dist. LEXIS 13713, 1995 WL 559030, *4 (S.D.N.Y. Sept. 20, 1995) (citation omitted).

 A choice was unnecessary because this Court concluded that plaintiff's products were not inherently distinctive under either Abercrombie or Duraco because their intrinsic nature did not serve to identify a particular source. "They have no meaningful information content." Id. As the Second Circuit recently said in Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53, 1995 U.S. App. LEXIS 23949, at *10, 1995 WL 497701, at *4 (2d Cir. Aug. 22, 1995), "to earn protection under the Lanham Act, a manufacturer must show that its trade dress is capable of distinguishing the owner's goods from the competition's and identifying the source of the goods." Plaintiff failed to prove that its trade dress meets this standard.

 Nothing in Jeffrey Milstein warrants a different result. The case involved the question whether greeting card trade dress consisting of photographs die cut to the shapes of the objects depicted in the greeting cards warranted trade dress protection. The Second Circuit did indicate, albeit without extended discussion, that the Abercrombie factors apply to the determination of protectability in trade dress cases. 58 F.3d at 31-32. But it went on to hold that the trade dress at issue was not protectable because the plaintiff was "effectively seeking protection for an idea or concept -- die cut photographic greeting cards." Id. at 33. And it did so in order to avoid giving the first user of the general idea of die cut photographic products a monopoly to which it would not be entitled under the copyright and patent laws. Id. at 32-34.

 Lest there be any confusion, this Court finds, in the language of Abercrombie, that the fabric designs at issue are not arbitrary, fanciful or suggestive. These terms must be read in light of Two Peso's admonition that trade dress is inherently distinctive if its "intrinsic nature serves to identify a particular source of a product." 112 S. Ct. at 2757. Plaintiff's view would result in Lanham Act protection being extended to a design without regard to whether the design serves the purpose that the Lanham Act was intended to protect.

 While one or another detail of plaintiff's designs may be arbitrary or fanciful in the sense that it reflects a unique variation on a commonplace theme, the focus in determining distinctiveness is on the overall appearance of the product when viewed in its entirety. See, e.g., Jeffrey Milstein, Inc., 58 F.3d at 32. The use of geometric design elements, bright colors and the like is common in neckties. There is nothing about plaintiff's designs that inherently "serves to identify [their] particular source" either by name or by conveying a sense that they come from a particular, though anonymous, source. To afford Lanham Act protection to plaintiff's designs would be to give plaintiff a monopoly over a range of fabric designs employing geometrics and bright colors despite the lack of any justification for doing so in the name of protecting consumers against confusion as to source.

 This conclusion is reinforced by the Second Circuit's decision, the day prior to the decision in this case, in Mana Products, Inc. v. Columbia Cosmetics Mfg. Corp., 65 F.3d 1063, 1995 U.S. App. LEXIS 26761, 1995 WL 553876, at *4 (2d Cir. 1995). The Court there observed that distinctiveness is "the first element that must be proved in a trade dress infringement cause of action." It noted also that:

"where it is the custom in a particular industry to package products in a similar manner, a trade dress done in that style is likely to be generic. In other words, when the possibilities of the ultimate trade dress for a product are limited, and the trade dress is therefore in commonplace use, it is unlikely that consumers will view the trade dress as distinctive of the goods or services of a particular seller." Id., at *6 (citations omitted).

 It went on to hold that "in the compact industry, nothing about a rectangular or square shape or black color is striking, unusual, or otherwise likely to differentiate the products of a particular producer" and that the plaintiff's trade dress was not protectable. Id. (citations omitted). So too here. The plaintiff in this case has failed to prove that its particular use of bright colors and geometric patterns, in an industry in which the use of such design elements is common, is "striking, unusual, or otherwise likely to ...

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